Do you know who I am? Protecting famous names
One of Andy Warhol’s best-known quotes is that, in the future, everyone will be world-famous for 15 minutes. There are doubts as to whether he really coined the phrase, but it seems that nowadays more and more people reach celebrity status, even if only for a short period. Alongside more traditional celebrities (writers, singers, actors, or athletes), a number of individuals have, through so-called “reality TV shows” or social media, become famous almost overnight.
A famous name can be the source of enormous revenue, through licensing deals or the endorsement of third parties’ products. However, the high level of attention celebrities receive can attract fraudsters trying to capitalise on someone’s name to sell their own products or services. How can celebrities protect their name in such instance?
In contrast to other jurisdictions, in the United Kingdom celebrities cannot use “image rights,” “rights to privacy,” or “right of personality” to control the use of their name, image, or likeness. They can, however, rely on statutory or common law legal rights, such as passing off and trade mark law to prevent the use (or the registration as a trade mark) of their name in relation to unauthorised products or services. We discuss these actions below.
For completeness, other claims may be available. For example, a celebrity may claim defamation or breach of contract, complain to the Advertising Standards Authority in relation to an advertisement using their name or image without permission, or file a domain name complaint for the cancellation or transfer of a domain using their name. Since these claims either require additional offences (such as slander or the breach of a contract) or follow specific policies and procedures (which merit an article all to themselves), they have been omitted from the scope of this article.
Passing off
The tort (i.e. the wrongful act) of passing off protects the goodwill associated with a business, its goods, or its services. Goodwill has been defined as “the attractive force which brings in custom” to a business (IRC v Muller & Co.’s Margarine Ltd [1901] AC 217). At its simplest, passing off occurs when a business misleads customers into believing that its goods are those of another supplier, in order to benefit from the goodwill of that other supplier.
A successful passing off claim requires the claimant to prove that: (i) it has built-up goodwill in its goods, services, name, or mark; (ii) there has been a misrepresentation by the defendant, leading customers to believe that the defendant’s goods or services are those of the claimant (or goods or services the claimant has approved); and (iii) this results (or is likely to result) in damage.
Can a celebrity, whose name is used on goods (or for services) without consent, successfully claim passing off? This has not always been the case. For a long time it was held that, in the absence of a common field of activity between the claimant’s and the defendant’s goods and services, there was no misrepresentation. In McCulloch v Lewis A May [1947] 2 All E.R. 845 , a famous radio presenter (known as “Uncle Mac”) brought a passing off claim against the defendant, which was using the name “Uncle Mac” to promote its cereals. The claim was dismissed because there was no connection between the claimant’s business (presenting radio programmes) and the defendant’s business (selling cereals) and thus no misrepresentation. More surprisingly, in Lyngstrad v Anabas Products Ltd [1977] FSR 62 , the pop group Abba failed to prevent a defendant from using the name “Abba” on a variety of goods (T-shirts, badges, and key rings). The passing off claim was dismissed on the basis that Abba had not established goodwill in trading in those goods. There was no common field of activity between the claimant’s and the defendant’s activities and thus no misrepresentation.
This changed thanks to the Irvine v Talksport [2003] EWCA Civ 423 case, involving the then Formula 1 driver Eddie Irvine and the radio broadcaster Talksport. Without Eddie Irvine’s consent, Talksport had promoted its services through a photograph showing him holding a portable radio with the Talksport name and logo on it. The photograph had been doctored (the original photograph showed Eddie Irvine holding a mobile phone) and clearly implied that he had endorsed the radio station.
Eddie Irvine had established reputation and goodwill, he was a well-known racing driver, and, more importantly, the public was aware that he was involved in various endorsement and sponsorship deals. The main question was whether misrepresentation had occurred despite an apparent lack of connection between the parties’ activities. The judge acknowledged that it was common practice for celebrities to exploit their names (and images) by way of endorsements and that this extended to fields outside a celebrity’s field of expertise. Misrepresentation took place because the public had been misled into believing that Eddie Irvine had endorsed (or was associated with) the defendant’s services. This damaged Mr. Irvine’s ability to monetise his name (or likeness) for other products and services and thus amounted to passing off.
In Fenty v Arcadia [2015] EWCA Civ 3 (22 January 2015), the popstar Rihanna sued the retailer Topshop for passing off after it had sold a T-shirt emblazoned with a photograph of her. Rihanna had built-up goodwill, she had her own range of clothing at a competitor’s retail shop called River Island, and had been involved in other endorsement deals. As with the Irvine case, the discussion circled around the false endorsement claim: would the public be misled into believing that Rihanna had endorsed the Topshop T-shirt? In this instance, it was held that, based on the facts of the case (Rihanna had also been involved in Topshop promotions in the past), a substantial number of customers would have assumed there was a connection with the Topshop product and the false endorsement claim succeeded.
It should be noted that the above two cases related to the use of celebrities’ images and not their name. However, the same principles equally apply.
Potential Pitfalls
The fact that the tort of passing off has adapted to cover false endorsement claims is welcome, however, it does not mean that any unapproved use of a celebrity’s name (or image) on products (or in relation to services) will automatically lead to a successful passing off claim. Passing off cases rely heavily on the evidence submitted by the parties and claimants willing to protect their famous name still need to prove goodwill, misrepresentation, and damage.
In most cases, a celebrity should not have issues proving goodwill, however, it should not be assumed that the notoriety of a name is by itself proof of goodwill. In the Irvine and Rihanna cases, both celebrities were known for licensing the right to use their images. This helped their claims because there was an expectation from the public that products bearing their images had likely been endorsed. Other celebrities (for example, politicians who have never licensed their name or image) may struggle to prove goodwill, misrepresentation, and damage.
Another potential hurdle could come from the name itself. It may be harder for a celebrity, whose name is commonly used among the public, to prove that a product bearing their name gives rise to the false message that these products have been endorsed. For example, and this is just speculative, it may be easier to prove misrepresentation if the name used is “Rihanna” than if it is “Tom Jones” or “Chris Evans.”
Trade Mark registration
A registered trade mark gives its owner a proprietary right, which can be used to prevent third parties from using the same mark in relation to the goods and services covered by the registration. Provided a risk of confusion exists, a trade mark owner can also prevent the use of names that are similar to the registered mark, in relation to similar goods or services.
Owning a registered trade mark confers many advantages. A trade mark owner does not need to demonstrate goodwill in its mark and rights are established as soon as the mark proceeds to registration. Furthermore, while in a passing off case a claimant must prove misrepresentation even if the other side uses the same mark, in the case of a defendant using a mark identical to the claimant’s registered mark (and for identical goods or services) confusion does not need to be proven. For completeness, there are specific limits to the claimant’s rights, for example in the case of comparative advertising.
Many celebrities have registered their names as trade marks. Using some of the examples discussed above, the names “Rihanna” and “Eddie Irvine” were both registered as trade marks in the UK (although, in the case of “Eddie Irvine” the marks were registered in a slightly stylised format and have since lapsed). Had the defendants to these cases used the names “Rihanna” and “Eddie Irvine” as opposed to images of the celebrities, the claimants may have claimed trade mark infringement alongside passing off.
Potential pitfalls
As shown above, a trade mark registration gives its owner rights that can be proven and enforced more easily than with a passing off claim, however, the registration of a famous name as a trade mark is not without hurdles.
Indicator of trade origin
The registration of a mark will be refused if the relevant trade mark office considers that the mark is not sufficiently distinctive (the public will not perceive it as an indicator of trade origin) or is descriptive of the goods and services covered.
The registration of a famous name as a trade mark could prove difficult if the relevant office considers that it describes the goods and services covered. For example, the European Union Intellectual Property Office (EUIPO) refused the registration of the name “George Orwell” as a trade mark for goods such as (among others) “printed matter” and “multimedia recordings and publications.” The EUIPO took the view that customers would see the name “George Orwell” as a descriptive indication of the subject of these goods (for example, a book about George Orwell). The applicant may yet succeed – the case has been appealed to the Grand Board of Appeal of the EUIPO, which at the time of writing, has not yet issued its decision.
The UK Intellectual Property Office (UKIPO) adopts a more conciliatory approach. It acknowledges that, when used in relation to certain goods or services, the public will see the name of a famous individual as an indication that the goods or services are about the person, rather than an indication of the trade origin. However, the UKIPO considers (as per its examination guide) that, “the names of famous individuals may serve as trade marks for goods and services such as printed publications, musical recordings, films, videos, TV programmes etc. on the basis that they are likely to imply some form of commercial control, and that the release/marketing of such goods and services has been authorised by the famous individual.” This approach is welcomed; it would seem unfair that the registration of a name as a trade mark would prove to be harder on account of the fame enjoyed by that name. In fact, it is worth noting that, while the EUIPO has refused the application “George Orwell,” the same mark has been successfully registered in the UK for a variety of goods, including “printed matter” and “multimedia recordings and publications,”
Notwithstanding the above, trade mark applicants should exert caution when drafting the list of goods and services that will be used for their trade mark application. The UKIPO may still refuse an application to register a famous name as a trade mark if it considers the mark descriptive of the goods. For example, Sir Alex Ferguson’s application to register his name as a trade mark was refused for goods such as “photographs, posters and stickers” on the basis that the mark would be interpreted as merely descriptive of the subject-matter of these goods (defined as “image carriers”), such as posters about Sir Alex Ferguson.
The outcome of a trade mark application will very much depend on the facts of the case, the goods and services for which protection is sought, and how famous the name is (for example, the UKIPO did accept the registration of the mark “George Orwell” for “photographs, posters and stickers”). In some instances, it may be preferable to commence use of the mark on the relevant goods to ensure the public sees the name as an indicator of origin, before trade mark protection is sought, or if possible, to act proactively and seek protection at an early stage in a celebrity career.
Third party oppositions
Third parties can oppose the registration of a new trade mark if they own prior rights for the same mark or a similar mark and a risk of confusion exists. It may seem strange but achieving celebrity status does not guarantee that the registration of a famous name as a trade mark will not be blocked. For example, when the pop singer Miley Cyrus tried to register the EU trade mark “Miley Cyrus” her application was opposed by the owner of an earlier trade mark registration for “Cyrus.” When Lionel Messi tried to register a trade mark, which included his surname “Messi,” the application was opposed by the owner of a prior trade mark registration for “Massi.” In both cases, the applicants eventually succeeded and registered their trade marks (although it took Lionel Messi nine years).
It is possible that the reputation of an individual will help in defending an opposition. For example, in the Messi case (which related to an EU trade mark application), it was held that Messi was so famous even non-football fans would know who he was. This resulted in a likely association with the mark “Messi” and prevented a risk of confusion with the prior mark “Massi.” Notwithstanding the above, many cannot claim to be as famous as Messi and trade mark applicants should always conduct searches prior to the filing of their mark, so as to determine whether the new application conflicts with prior rights (and how the risk of conflict can be reduced).
Post-registration concerns
A trade mark can be revoked (in full or for some of the goods and services covered) if there has been no genuine use for a continuous period of five years. Trade mark applicants may be tempted to include as many goods and services as possible in their application, to broaden the protection that will be offered to a mark. However, if there is no subsequent use of the mark for all the goods and services covered, the trade mark registration may be at risk of revocation for the unused goods and services in the future.
Finally, it is worth noting that the registration of a UK trade mark will not, in itself, block third parties’ trade mark applications for identical or confusingly similar marks. Trade mark owners should monitor the UK Trade Mark Register and put in place a watch service to ensure they are notified of potentially conflicting trade mark applications, enabling them to take swift action.
Conclusion
The registration of a famous name as a trade mark is highly recommended to protect it against unauthorised use by third parties. However, one should not assume that reaching celebrity status guarantees a successful trade mark registration. As with any other marks, applicants must carefully plan their trade mark protection, in terms of scope of coverage for the new mark but also to minimise the risks of objections and opposition.
